Todd Hales is a partner in the law firm of McDermott Will & Emery LLP and is based in the Firm's Orange County office. He focuses his practice on all aspects of intellectual property law with a focus on strategic intellectual property portfolio management and counseling.
Todd works closely with a variety of clients in the development and management of their IP portfolios by helping them identify and protect key technologies and innovations through careful selection of domestic and foreign protection and enforcement strategies. His practice also involves conducting due diligence investigations in connection with funding, acquisition, and merger transactions, preparation of legal opinions on patent validity, infringement, and noninfringement, and preparing portfolio and landscape evaluations and prelitigation analyses. Todd also advises clients on employment agreements and invention ownership, nondisclosure agreements, assignment of IP rights, and joint development agreements.
His technical experience includes representation of individuals and companies in a wide range of technologies. In medical device and life sciences, Todd’s technical experience includes ophthalmology, cardiology, urology, gastroenterology, neurology, pulmonology, radiology, and otolaryngology. His experience also includes computer hardware systems, software systems and architecture, networking technologies, environmental technologies, aerospace, sports equipment, construction systems and tools, mechanical and electro-mechanical devices and systems, and optical technologies.
Representative Experience
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Conducted IP due diligence on medical device developer and manufacturer for $1.2 billion SEC-registered high grade debt offering
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Represented vascular device company in development of IP portfolio and defended IP due diligence during $150 million sale of company
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Defended IP due diligence of radiotherapy company during financing for $42 million
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Represented medical device company in development of IP portfolio and during financing for $40 million
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Developed IP portfolio for ophthalmic device company and defended IP due diligence during financing for $22 million
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Defended IP due diligence of neurological electrotherapy company during financing for $20 million
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Represented ophthalmic device company in acquisition of competitor for $10 million
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Defended IP due diligence of surgical device company during sale of IP for $5 million
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Represented environmental technology turbine company in development of IP portfolio
While earning his degree in mechanical engineering with a minor in physics from Brigham Young University, Todd was inducted into Tau Beta Pi Engineering Honor Society. He later earned his J.D. from Brigham Young University, where he served as executive editor of the BYU Law Review.
Todd is admitted to the California State Bar and is a registered patent attorney with the United States Patent and Trademark Office. He has lectured on many occasions in public and private fora regarding intellectual property portfolio strategy and management. He co-chairs the Intellectual Property Section of the Orange County Bar Association, and previously served as chair, vice-chair and program director of the section. Todd is also on the Board of Directors for the Orange County Chapter of the J. Reuben Clark Law Society and is a member of the American Intellectual Property Law Association.
Education
- Brigham Young University Law School, J.D., 2003
- Brigham Young University, B.S.M.E. (Tau Beta Pi), 2000
