Experience - Taysen Van Itallie
Pharmaceutical Licensing, Joint Development, and Related Business Disputes
Experience as an arbitrator, advocate and litigation manager in scientifically complex disputes involving pharmaceutical licensing, development and marketing. As head of litigation for Johnson & Johnson (J&J), responsible for numerous arbitrations concerning allegations of breach of license and contract terms in developing and marketing drugs, drug formulations and drug delivery systems by licensors to J&J. Also responsible for multiple arbitrations by J&J against pharmaceutical development or marketing partners for failure to abide by contract terms and other misconduct.
Patent Litigation and Arbitration
Extensive patent litigation and arbitration experience as a partner at Patterson Belknap Webb & Tyler, including first chair trial of arbitration between consumer products manufacturers concerning infringement and validity of patents on high-volume disposable consumer products, obtaining preliminary injunction against competitor for infringement of patents on ophthalmic microsurgical equipment, and prosecuting action for infringement of coronary stent patents.
Responsible at J&J for dozens of Abbreviated New Drug Application (ANDA) cases against generic manufacturers concerning infringement and validity of patents blocking market entry, including on the blockbuster products Risperdal, Topamax, Levaquin, Duragesic, Concerta and Aciphex. Responsible for numerous lawsuits and arbitrations involving infringement and validity of patents pertaining to contact lenses, orthopedic implants, sanitary protection products, blood glucose monitors, combination analgesic products, endoscopic surgical instruments, sterilization equipment, monoclonal antibody technology, other biologics, and numerous pharmaceuticals.
Medical Device Licensing, Joint Development and related Business Disputes
Experience as sole arbitrator in complex medical device development dispute. Responsible as head of litigation for J&J, whose subsidiaries comprise the world’s largest group of medical device companies, for numerous arbitrations and litigations with product development partners, including surgeons and physicians, of a variety of medical devices such as orthopedic implants, aortic aneurysm grafts, coronary stents and catheters.
General Business Disputes
Handled numerous commercial cases in private practice, including first chair bench and jury trials of breach of contract claims. Experienced as a mediator of federal court commercial actions, including cases involving copyrights claims, franchise agreements, contract claims and consumer actions.
Responsible at J&J for dozens of claims on behalf of and against J&J and its various operating companies by business partners, suppliers, customers and providers of various services for breach of contract, fraud and other business torts. Spearheaded policy that the company imbed ADR provisions in all its commercial contracts to assure resolution of contract claims in arbitration or preliminary mediations.
Pharmaceutical and Medical Device Product Liability, Including Related Insurance Recovery Arbitration
First chair jury trial experience at Patterson Belknap of cases involving prescription drugs and medical devices. Argued appeals in the District of Columbia, Minnesota and California in pharmaceutical and consumer product liability cases.
Responsible at J&J for strategic decision-making regarding multiple pharmaceutical and medical device mass torts, including those regarding Propulsid, Risperdal, Ortho Evra, Levaquin, and the Charite artificial disc. Oversaw the conduct of multiple arbitrations against insurers providing successive layers of coverage of product liability losses.
Legal Fee Disputes
Responsible in private practice for conducting arbitration about reasonableness of legal fees related to temporary restraining order. Responsible at J&J for arbitration of major legal fee dispute requiring extensive review of billing and expense records and presentation of expert evidence on reasonableness of fees and expenses. Managed outside litigation budget at J&J for law firms and non-law firm legal service providers. Developed outside counsel billing guidelines and implemented bill review procedures and related software. Negotiated volume discounts, alternative fees and rate increases with law firms and with non-law firm providers. Detailed knowledge of appropriate budgeting and billing on litigation of all types and sizes.
Responsible at J&J for the corporation’s compliance with its e-discovery obligations. Sought to achieve “litigation readiness,” allowing prompt and economical response to demands for production of electronic data. Worked with IT, records management, litigation lawyers and paralegals to establish procedures for preservation, collection, processing and production of data. Responsible for hiring and training dedicated e-discovery staff, creating procedure manuals, sensitizing employees to preservation obligations, and developing relationships with vendors in the business of collecting, processing and producing electronic data.
Testified before the Advisory Committee on the Federal Rules of Civil Procedure regarding the e-discovery amendments in 2005, and before the Evidence Rules Advisory Committee in connection with the amendments to Federal Rule of Evidence 502 on attorney-client privilege waiver.
Active with the Lawyers for Civil Justice and the Civil Justice Reform Group (served as Operating Committee co-chair 2006-2008) in advocacy before the Advisory Committee on the Federal Rules of Civil Procedure to further improve the e-discovery rules. Presented at ABA and other meetings on e-discovery issues and taught the topic as part of my course on Drug and Device Liability Law and Policy at Seton Hall Law School.
Responsible at J&J for major international arbitrations and litigations, including multiple arbitrations in London against insurers for product liability losses, ICC arbitration in Paris concerning dispute between J&J consumer products company and French joint venture partner, trademark litigation in Rotterdam to prevent launch of a major J&J consumer product, pan-European patent litigation against infringers of licensed patents covering the J&J product Erythropoietin, and patent cases in the Netherlands, Italy and Spain against infringers of J&J intellectual property on coronary stent technology.
Experience in Latin America as head of the J&J Latin America Law Group, including management responsibility for lawyers in Brazil, Argentina, Mexico and Miami, Florida, as well as oversight responsibility for arbitration and litigation across the continent.
Conducted internal investigations in Mexico City, Warsaw, Poland and had oversight responsibility for investigations in Italy, Greece and Romania.
Formulated global dispute resolution clauses for the J&J enterprise, creating preferred clauses for Northern Europe, Southern Europe, Africa and the Middle East, the Pacific Basin, and Latin America, selecting optimal administering organizations and governing rules in each market.
In private practice, I handled a number of significant antitrust cases, including as first chair of jury trial of Sherman and Clayton Act claims challenging a brand name drug manufacturer’s use of exclusive dealing contracts with chain drug stores. Advocate in U.S. Tax Court trial involving issues of decedent’s state of mind as to imminence of death to determine if agreement transferring interest in major private company was testamentary substitute. Conducted jury trial of a religious discrimination case and handled employment discrimination cases in private practice. At J&J, oversaw the conduct of all employment litigation against the company and spearheaded the introduction of J&J’s mandatory mediation program for employment related disputes.