M. Todd Hales
California
Morgan, Lewis & Bockius LLP
600 Anton Blvd., Ste. 1800
Costa Mesa, CA 92626-7653
United States
Tel: +1.714.830.0514
Email:
todd.hales@morganlewis.com
Web:
www.morganlewis.com
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.
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.
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
- 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
- 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
- Executive Editor, BYU Law Review
With more than 200 lawyers and other professionals, Morgan Lewis has one of the largest intellectual property practices of any full-service law firm in the world.
We have a unified practice across our global offices, and our practice is well balanced across prosecution, transactions, and litigation. The size and breadth of our practice, coupled with our geographic and subject-matter balance, means we have the talent to match most needs. We are equally dedicated to procuring IP rights, asserting such rights against infringers, and defending clients accused of infringement. Whether related to automotive, technology, the life sciences, energy, manufacturing, finance, retail or consumer goods, we combine legal expertise, industry knowledge, and scientific and technical depth.
We provide a range of IP services, including the following:
- Litigation at the district court, International Trade Commission, and appellate levels
- Patent preparation and prosecution
- Trademark and copyright counseling and portfolio management
- Post-grant and other administrative proceedings before the US Patent and Trademark Office (USPTO)
- Licensing, technology transfer and other transactions
- Litigation under the Hatch-Waxman Act and Biologics Price Competition and Innovation Act (BPCIA)
- Addressing IP issues in corporate transactions
Our IP litigation practice, which includes Ph.D.s in multiple subject areas, has some of the firm’s top trial lawyers with a strong record of performance in jury and bench trials. We also have a proven IP appellate practice with a winning record at the US Court of Appeals for the Federal Circuit and the US Supreme Court. We are regularly involved in transactions on behalf of clients, including due diligence and other IP aspects of mergers and acquisitions, licensing, and technology transfer.
From our offices in strategic hubs of commerce, law, and government across North America, Asia, Europe, and the Middle East, we work with clients ranging from established, global Fortune 100 companies to enterprising startups.
Our team of more than 2,200 lawyers and legal professionals provides comprehensive corporate, transactional, litigation, and regulatory services in major industries, including energy, financial services, healthcare, life sciences, retail and ecommerce, sports, technology, and transportation. We focus on both immediate and long-term goals with our clients, helping them address and anticipate challenges across vast and rapidly changing landscapes.