Todd Hales
Registered Patent Attorney • Partner
Education
J.D., J. Reuben Clark Law School, Brigham Young University
B.S., Tau Beta Pi, Brigham Young University, Mechanical Engineering
Expertise
International Patent Prosecution • IP Due Diligence Investigations • IP Analysis & Opinions • Portfolio Management • Transactions & Licensing • Client Counseling
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.
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Representative Matters
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 the 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
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Professional Admissions & Associations
California State Bar
U.S. Patent and Trademark Office
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Awards & Recognition
Life Sciences Star, Patent Prosecution, Patent Strategy & Management, LMG Life Sciences Awards Americas (2023, 2024)
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, 2024)
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