M. Todd Hales

Partner

M. Todd Hales advises clients on virtually all aspects of intellectual property (IP) law, with an emphasis on strategic IP portfolio management and counseling within the technology and life sciences industries. Working closely with clients in the development and management of their IP portfolios, Todd helps identify and protect key technologies and innovations utilizing protection and enforcement strategies throughout the United States and across the globe. Todd is the leader of the Orange County IP practice and a co-leader of the IP MedTech Working Group.

Extended Profile

Todd conducts due diligence investigations in funding, acquisitions, and merger transactions; prepares legal opinions on patent validity, infringement, and non-infringement; and handles portfolio and landscape evaluations and pre-litigation analyses. He also assists with employment agreements and invention ownership, non-disclosure agreements, assignment and licensing of IP rights, and joint development agreements.

Todd works with companies focused on expanding and evolving technologies. His technical experience in the medical device and life sciences sector includes ophthalmology, cardiology, urology, gastroenterology, neurology, pulmonology, radiology, and otolaryngology. In the technology space, his work has included computer hardware systems, software systems and architecture, networking technologies, environmental technologies, aerospace, sports equipment, construction systems and tools, mechanical and electromechanical devices and systems, and optical technologies.

Selected Representations

Conducted IP due diligence on a medical device developer and manufacturer for a $1.2 billion US Securities and Exchange Commission (SEC)-registered high grade debt offering
Represented a vascular device company in the development of its IP portfolio and defended its IP due diligence during the $150 million sale of company
Defended an IP due diligence of a radiotherapy company during financing for $42 million
Represented a medical device company in the development of an IP portfolio and during financing for $40 million
Developed the IP portfolio for an ophthalmic device company and defended IP due diligence during financing for $22 million
Defended IP due diligence of a neurological electrotherapy company during financing for $20 million

Education

Brigham Young University, J. Reuben Clark Law School, 2003, J.D.
Brigham Young University, 2000, B.S.M.E., Tau Beta Pi

Admissions

California
US Patent and Trademark Office

Awards and Affiliations

Life Sciences Star, Patent Prosecution, Patent Strategy & Management, LMG Life Sciences Awards Americas (2023)

Member, Practice Group of the Year, Intellectual Property, Law360 (2019)

Member, Litigation Department of the Year–Intellectual Property, The American Lawyer (2019)

Recommended, Intellectual property: Patents: prosecution (including re-examination and post-grant proceedings), The Legal 500 US (2023)

Recommended, Intellectual property: Patents: licensing, The Legal 500 US (2019)

Rising Star, Southern California Super Lawyers (2010–2014)

Former chair, vice-chair and program director, Orange County Bar Association, Intellectual Property Section

Former Member, Board of Directors, J. Reuben Clark Law Society, Orange County Chapter

Executive Editor, BYU Law Review